Appeal No. 1999-0063
Application No. 08/602,366
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the Examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
In response to the Examiner’s obviousness rejection of
the appealed claims, Appellant initially attacks (Brief, page
13; Reply Brief, page 10) the Examiner’s establishment of any
motivation for the proposed combination of Yoshioka and
Inazawa. After reviewing the applied prior art references in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Briefs. As the supposed
rationale for the proposed combination, the Examiner suggests
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